Choosing the perfect business or brand name is only half the battle when starting a new venture. You need to protect that name from getting stolen or misused. But what if you haven’t started using the brand name yet? The good news is even if your website is still under construction and marketing materials are still at the printers, you can apply for protection with an intent to use trademark application.
What is a Trademark?
In its most basic definition, a trademark is a word, phrase, symbol, design, or combination of these elements identifying the source of a product or service. A trademark is how customers recognize one brand from another in the marketplace it distinguishes a brand from its competitors. Registering a trademark gives the owner protection from other businesses in the United States using the registered marks.
Registered trademarks are obtained through the U.S. Patent and Trademark Office (USPTO) by filing an application and then going through a review process. Once a trademark is granted, it must be used consistently and not for fraudulent purposes. Also, it must be renewed periodically by the USPTO deadlines. If you fail to follow the guidelines and deadlines regulated by the USPTO, your rights to the trademark can be challenged, and eventually, ownership may be canceled.
You do not have to register a trademark with the USPTO officially. Instead, you can choose to use a TM symbol with the brand name and achieve “common law” rights, although brand protection is not nearly as strong as when you register the trademark through the USPTO.
Who Can Apply for Trademark Protection?
As explained above, trademark registration can be granted on distinctive logos, names, slogans, and designs. Most business owners seek trademarks for company names, product names, logos, and taglines. If you apply for a trademark as an individual or sole proprietorship, you simply use your name and country of citizenship on the application. However, if you are applying for a trademark as a legally formed entity (C corporation, LLC, partnership), you must use the business’s official name on the application.
Business owners may also file for multiple trademark ownership, such as in a sole proprietorship or partnership, when co-owners each want trademark ownership. In addition, trademarks can be co-owned between a manufacturer and distributor. In the multiple-ownership scenario, all owners fill out and sign the trademark application and are responsible for the trademark’s maintenance.
What is an Intent to Use Trademark?
The United States Patent and Trademark Office (USPTO) offers two types of trademark applications:
- Actual Use – If you have already started your business and used your brand name, company name, or logo in commerce, you should apply using the actual use application.
- Intent to Use – The intent to use trademark application is for trademark applicants who have not yet used the name in commerce but “intend” on using it in the future.
Once you file the intent to use application, the USPTO gives you six months from the application filing date to use the mark in commerce, file a statement of use, or apply for an extension. An “Extension Request” is a sworn statement indicating the applicant still intends to use the mark in commerce but needs more time.
It is also important to point out that registering a company name with its home state does not grant trademark protections. Neither does it stop a business in another state from starting a company with the same name.
The main reason to file an intent to use application is to essentially “call dibs” or declare your rights to the trademark even if you aren’t ready to use the brand in commerce. For example, if you file an intent to use trademark application, the filing date is considered the “constructive use” date. Even if another applicant files for actual use after that date, the trademark rights still belong with you as long as you meet the subsequent requirements documentation deadlines.
How to File an Intent to Use Trademark Application
You can file an intent to use trademark application directly through the USPTO website system Trademark Electronic Application System (TEAS), through a trademark attorney, or a trademark registration service such as CorXec.
The USPTO offers two versions of the application form: TEAS Plus and TEAS Standard. Both options are available for intent to use applications. The TEAS Plus application is designed for applicants looking for a less expensive and more efficient path. In TEAS Plus, the applicant must fill out every required field. However, if there’s a reason the applicant cannot fill out some information, the person can always use the TEAS Standard application.
Besides the lower filing fee, the benefit of the TEAS Plus application is the potential for quicker review times and quicker approval. However, applicants sometimes hit a classification roadblock using the TEAS Plus application. You must choose the type of goods and services from the USPTO’s Acceptable Identification of Goods and Services Manual (the ID Manual). If your goods or services do not appear in the ID Manual, you must use TEAS Standard application.
Timing is Important
Although the process may be time-consuming, the intent to use trademark application could make the difference between obtaining the business or brand name you desire or losing it to a competitor. Yes, you must pay when you file the application, ask for extensions, and file the statement of use, but on the other hand, you’ll have the peace of mind that your trademark is protected by the federal government.
It’s hard to predict how long a trademark application will take to be reviewed by USPTO attorneys, and you may have to go back and forth to clear up missing or confusing information. However, if you have a brilliant idea for a brand and have plans to launch it into the market, then the intent to use trademark application is a smart move.
